Getting a priority claim wrong in a patent application is a serious matter. There’s a super-simple thing that ePCT does to prevent many ways of getting priority claims wrong, that Patentcenter fails to do. Of course Patentcenter should do the same validation that ePCT does — cross-checking against DAS. I’ll explain.
There are of course many ways to get a priority claim wrong. One way is to forget completely to make the priority claim. But most filers don’t screw up that badly. if it was intended that some sort of priority claim be made, almost always it would get noticed by somebody if the filer were to completely forget to do anything about making the priority claim.
In this blog article I am mostly talking about ways of getting a priority claim wrong that a person might say are a bit more subtle than completely forgetting to do it. For example think about getting a digit wrong in a priority application number, or transposing a couple of digits, or getting a priority filing date wrong. Or for example getting mixed up about whether “5-4” means May 4 or April 5 in that priority claim from a country where the convention about month-date sequence is different than the convention in the US. Or using an incorrect ISO-3166 two-letter code for the priority Office (“EP” perhaps when the filer should have used “EM” as an example).
Now I know what you’re probably thinking. You’re probably thinking, relax! If you get a priority claim wrong in the USPTO, it’s fixable. It’s just that you have to pay $2000 and file a petition. Nope, it’s that simple. That path for curing the lapse is only available if (as a matter of fact, and if it bears up to scrutiny TYFNIL) the entire period of delay was unintentional, and if someone is willing to say so under penalty of perjury.
And likely as not, it is not “a petition”. Likely as not, you will find that to fix such a lapse you would need to file not one but two petitions. A first one of the petitions is to obtain forgiveness for having failed to present the priority claim (accurately and) timely so that USPTO could publish the application with an accurate priority claim. A second one of the petitions is to obtain forgiveness for having failed to hand in a certified copy of the priority application timely.
So, very clearly it is extremely desirable to not get a priority claim wrong in a patent application. It is extremely desirable to avoid getting a digit wrong in a priority application number, or transposing a couple of digits, or getting a priority filing date wrong. Or for example getting mixed up about whether “5-4” means May 4 or April 5 in that priority claim from a country where the convention about month-date sequence is different than in the US. Or using an incorrect ISO-3166 two-letter code for the priority Office (“EP” perhaps when the filer should have used “EM” as an example.)
Those who regularly use ePCT know exactly where I am going with this. In ePCT, if you key in (or, better, copy and paste in) a priority application number and filing date and two-letter Office code, ePCT will cross-check this information with the DAS system! Yes, ePCT validates the priority claim against a known-accurate external source.
- Yes, in ePCT if you get a digit in a priority application number wrong, it will warn you instantly, long before you get to the point of clicking “submit”.
- Yes, in ePCT if you transpose a couple of digits in the priority application number, it will warn you instantly, long before you get to the point of clicking “submit”.
- Yes, in ePCT if you getting a priority filing date wrong, it will warn you instantly, long before you get to the point of clicking “submit”.
- Yes, in ePCT if you get mixed up about whether “5-4” means May 4 or April 5, it will warn you instantly, long before you get to the point of clicking “submit”.
- Yes, in ePCT if you use an incorrect ISO-3166 two-letter code for the priority Office, it will warn you instantly, long before you get to the point of clicking “submit”.
The way that ePCT does this is, of course, as mentioned in the title of this article, by cross-checking against DAS.
This is the sort of thing that computers are supposed to be good at. Following simple procedures and rules. Cross-checking things between two sources or databases.
ePCT does it. Why doesn’t Patentcenter do it? The answer apparently is that at no point in the design of Patentcenter did its developers ever go to the trouble to look to see how ePCT does it. The answer apparently is that at no point in the design of Patentcenter did its developers ever get in touch with the folks at WIPO to see if they had any suggestions.
Now there are some limitations as to how many screwups by the filer this particular cross-check can detect. For example if a particular Office from which priority is going to be claimed has not yet joined the DAS system, then this kind of cross-check is not available. The most conspicuous example of this is EUIPO which has not yet joined DAS (see Eighty-four practitioners and applicants ask EUIPO to join DAS). As a second example, some particular Office might have joined DAS but might not yet have become a Depositing Office as to the type of application that is the source of the priority claim. See for example the USPTO which has joined DAS but has not yet become a Depositing Office with respect to PCT applications filed in the RO/US (see Thirty-one practitioners ask RO/US to join DAS). So of course it is incumbent upon practitioners to be unrelenting in their encouragement of Offices to participate fully in DAS.
But back to the main points of this blog article, which is:
Patentcenter should validate priority claims against DAS.
It would be quite simple, just a few dozen lines of code, for Patentcenter to do such validations. It is the sort of thing that a couple of alert coders could do in a weekend, if given soft drinks and their favorite take-out food, with part of Saturday and all of Sunday left over.
There are several points where Patentcenter should do this:
- In the web-based ADS. When the filer is constructing a web-based ADS, and when the filer attempts to “add a priority claim”, the would-be priority claim should be cross-checked in real time against DAS, with the results of the cross-check displayed in real time to the filer. ePCT does this. So should Patentcenter.
- When the filer uploads a computer-readable ADS. When the filer uploads a computer-readable ADS, if it contains a would-be priority claim, Patentcenter should extract the XML of the priority claims and should cross-check it in real time against DAS, with the results of the cross-check displayed in real time to the filer.
- When the filer later presents a priority claim. Unfortunately at the present time the USPTO has no “action” like in ePCT by which a filer can submit a subsequently-filed priority claim in a character-based and computer-readable way. Instead the USPTO only receives image-based requests, handled purely manually by human beings at the USPTO who later hand-key such changes (accurately or not) into USPTO systems. Many USPTO customers including this blogger have suggested over and over again to USPTO that it should find ways to receive text characters from users and auto-load those text characters into USPTO’s systems, such as the assignee name or firm name in an issue fee payment, or a bib-data change in a supplemental ADS, and over and over again this has fallen on deaf ears. But any time that a priority claim gets entered into a USPTO system, even by hand-keying by USPTO personnel, there should be a cross-check in real time against DAS. Once the priority claim gets hand-keyed into the USPTO system, then the would-be priority claim should be cross-checked in real time against DAS, with the results of the cross-check communicated immediately by email to the filer.
In any of these scenarios, the USPTO eventually mails out a Filing Receipt or Corrected Filing Receipt listing the priority claim. The Filing Receipt should also recite the outcome of the cross-check against DAS. Alternatively if USPTO were to prefer not to change the content of the Filing Receipt in this way, a second piece of paper could be mailed out with the Filing Receipt, communicating the outcome of the cross-check against DAS.
The outcome could be a smiley face, it could be a frowny face, or it could be a puzzled face.
The smiley face is, of course, the outcome where the inputs provided by the filer led to a “hit” in DAS. This is the equivalent of successfully obtaining a Certificate of Availability from the DAS system. The smiley face means that the application number, the filing date, the two-letter Office code, and the DAS access code all got entered accurately by the filer.
The puzzled face would be the outcome in those cases where “no news is not bad news”. What we are talking about is those cases where we know in advance that there was never going to be a “hit” in DAS, in which case the failure to get a “hit” in DAS is not an indication that the filer got anything wrong. This might happen because the Office of First Filing is not a DAS Depositing Office, or if the application type is one for which the OFF is not a Depositing Office. More subtly this might happen because the dates are no good. Some Office might have become a Depositing Office for a certain type of application but only for applications filed on or after some particular starting date, and the would-be priority claim might be for an application filed before that date. Hopefully this puzzled face would, over the years, arise less and less often as more and more Offices join DAS (and join as to more application types).
What remains is the frowny face. This happens if there might have been a “hit” in DAS but there was no “hit”. When we say “there might have been a hit” we mean that yes the OFF is a DAS member, and yes the OFF is a Depositing Office for the application type that we are talking about, and yes the dates work (the filing date of the would-be priority application comes on or after the starting date for the participation of the OFF for this type of application as Depositing Office). And yet there was no “hit”, which likely as not means that the filer got a digit wrong, or transposed a couple of digits, or got the filing date wrong, or got the two-letter Office code wrong, or got the DAS access code wrong. Or, as a more subtle matter, the applicant in the OFF might have screwed up by failing to give appropriate permission for the priority application to be made available to DAS. (Or, unlikely but conceivable, the permission might have been given but the OFF itself might have made some mistake about handling the permission.) Or instructing counsel in the foreign country might have miscommunicated the application number or DAS access code to US counsel.
But no matter what the exact cause of the frowny face, the frowny face needs to be communicated in real time. And the arrival of the frowny face will permit the filer to immediately set to work trying to figure out what went wrong. In most cases this will permit the filer to straighten things out before clicking the “submit” button. But even if the frowny face happens after the “submit” button got clicked, or even if the filer did not manage to straighten things out before clicking the “submit” button, at least the timely communication of the frowny face to the filer (there is some alliteration for you) will give the filer an opportunity to redouble his or her efforts and at least try to get things straightened out well before the expiration of the dreaded 4-and-16 time period (four months from the US filing date and sixteen months from the priority date, whichever is later).
But none of this protective result happens now with Patentcenter the way it is now, because Patentcenter does not do any cross-check against DAS at any point in its process flow. Not in real time when the filer first presents the priority claim, nor at any later point in its process flow. This is feature request FR20. This is Ideascale idea number 555.
Oh, and one last little thing.
The way it is now in USPTO’s workflow, how does an electronic certified copy of a priority application get into the US file from DAS? The answer is, only when some human being at the USPTO gets around to retrieving it in a manual retrieval process. I guess these human beings are a scarce resource at the USPTO, because USPTO has a business process rule that the human being will not attempt this manual process until after the patent application leaves “pre-exam”. Unfortunately this trigger sometimes fails to get communicated and the event of an application having departed from “pre-exam” somehow does not lead to the USPTO human being doing the retrieval.
Clearly what ought to happen is the retrieval from DAS ought to happen completely automatically as soon as possible in the USPTO workflow. This retrieval ought not to be the sort of thing that is dependent upon manual steps carried out by human beings based upon trigger messages that do or do not get successfully sent from somewhere to somewhere else at the USPTO.
Oh, and a second last little thing.
USPTO needs to pull the plug on PDX. The USPTO and EPO still use PDX, rather than DAS, as their way for EPO to provide electronic certified copies of priority applications to the USPTO. See (see Thirty-one practitioners ask USPTO to pull the plug on PDX).
Oh, and a third last little thing.
Patentcenter needs to display, in its priority tab, the results of the cross-check against DAS. It needs to show the smiley face or the puzzled face or the frowny face. ePCT does this. This is feature request FR21. This is Ideascale idea number 558.
And Patentcenter needs to display, in its priority tab, the results of the retrieval from DAS. If the retrieval from DAS worked, it needs to say so, along with the date that it happened and whether or not that date satisfies the 4-and-16 date. If the retrieval from DAS failed, it needs to say so. ePCT does this. This is feature request FR22. This is Ideascale idea number 559.